Ex parte OBERLANDER

Board of Patent Appeals and Interferences

Mar 17, 1998

07771685 (B.P.A.I. Mar. 17, 1998)

Application for patent filed October 4, 1991.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LEWIS B. OBERLANDER
__________
Appeal No. 95-0340
Application 07/771,6851
__________
ON BRIEF
__________
Before, FLEMING, BARRETT, THOMAS Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 20, all of the claims present in the appli-
cation. The invention relates to a communication network
including a method for the temporary routing and destination
Appeal No. 95-0340
Application 07/771,685
2
selection of incoming messages.
The independent claim 1 is reproduced as follows:
1. A method for use with a communication system, which
communication system includes an information profile for at
least one user, which information profile includes at least
some user preferences regarding a plurality of different
user destinations for the user, such that the communication
system will automatically select a destination from amongst
a plurality of candidate destinations for a message intended
for the user as a function, at least in part, of the
information profile, the method comprising the steps of:
A) accessing the communication system via a
communication link using a communication device;
B) transmitting from the communication device via
the communication link a temporary over-ride
instruction to the communication system to
temporarily over-ride at least one element in the
information profile while retaining the at least
one element from the communication system, such
that the temporary over-ride instruction can later
be automatically replaced by the at least one
element.
The Examiner relies on the following reference:
Riskin 4,757,267 Jul. 12, 1988
Claims 1 through 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Riskin.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
Appeal No. 95-0340
Application 07/771,685
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OPINION
We will not sustain the rejection of claims 1 through 20
under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining obviousness,
the claimed invention should be considered as a whole; there is
no legally recognizable 'heart' of the invention." Para-Ordnance
Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d
1237, 1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
Appellants argue on pages 4 and 5 of the brief that
Appellants' claims are readily distinguishable from Riskin. In
particular, Appellants argue that Riskin fails to teach or
Appeal No. 95-0340
Application 07/771,685
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suggest a method for use with a communication system comprising
the step of transmitting a temporary over-ride instruction to the
communication system to temporarily over-ride at least one
element in the information profile without removing at least one
element from the communication system, such that the temporary
over-ride instruction can later be automatically replaced by the
at least one element as recited in Appellants’ claims.
The Examiner argues on page 4 of the answer that Riskin in
column 28, lines 1-10, teaches transmitting a temporary over-ride
instruction to the communication system to temporarily over-ride
at least one element in the information profile. The Examiner
further states on page 4 of the answer that while Riskin did not
specifically teach that the over-ride was to be done without
removing the element from the system, such that the over-ride
instruction can later be replaced by that element automatically,
it would have been obvious to one of ordinary skill in the art at
the time of the invention to prevent any deletions of destination
number of Product-Dealers from the system because of the increase
in integrity of the system gained by preventing persons accessing
the system from indiscriminately deleting numbers of vendors
and/or vendors from deleting the numbers of their competitors.
Appeal No. 95-0340
Application 07/771,685
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Appellants argue on page 5 of the brief that the Examiner's
assertion that column 28, lines 1-10, of Riskin suggests the
temporary over-ride of a user destination within the data base is
misguided in that the cited passage only teaches that if a
certain user (a distributor) is not reachable at their
corresponding user destination, the system can continue to route
the caller to another user (another distributor) until a
connection is made. Appellants argue that because Riskin is only
concerned with specifying one user destination for each user, it
is not obvious that one would even want to temporarily replace a
user destination, let alone retain any temporarily replaced
elements.
Upon a closer reading, we find that Riskin teaches a
telephone system that automatically connects a potential customer
with a nearby dealer who can provide the goods or services
desired by the potential customer. The potential customer dials
an "800" number which includes digits which uniquely identify the
product or services desired. The system identifies the telephone
number of the potential customer and a computer routes the call
to a dealer in the general vicinity of the potential customer.
Appeal No. 95-0340
Application 07/771,685
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If the dealer's telephone number is busy or does not answer, the
system can attempt to call another nearby dealer if one exists.
We note that the Examiner argues that the user is an
advertised product or service and the information profile of the
user preferences is the database of dealers which can provide the
advertised product or service. See the answer pages 3 and 4.
However, Appellants' claim 1 recites "transmitting from the
communication device via the communication link a temporary over-
ride instruction to the communication system to temporarily over-
ride the at least one element in the information profile without
removing the at least one element from the communication system,
such that the temporary over-ride instruction can later be
automatically replaced by the at least one element." We note
Appellants' remaining claims recite similar limitations.
However, we fail to find that Riskin's teaching of a telephone
system that can attempt to call another nearby dealer, if the
first called dealer's telephone number is busy or does not
answer, teaches a temporary over-ride instruction to temporarily
over-ride at least one element, the first dealer, in the
Appeal No. 95-0340
Application 07/771,685
7
information profile without removing the at least one element
from the communication system, such that the temporary over-ride
instruction can later be automatically replaced by the at least
one element as recited in Appellant's claims. The Examiner has
failed to show that Riskin teaches that the dealer is removed
from the information profile much less an a teaching of an over-
ride instruction as claimed by Appellants. In fact, in column
28, lines 1-10, Riskin teaches that if first dealer is busy, the
system simply calls another dealer. Riskin fails to teach that
the dealer number is removed from the information profile and
later replaced.
Furthermore, we fail to find any suggestion of modifying
Riskin to provide temporary over-ride instruction to temporarily
over-ride at least one element in the information profile
without removing the at least one element from the communication
system, such that the temporary over-ride instruction can later
be automatically replaced by the at least one element as recited
in Appellant's claims. The Federal Circuit states that "[t]he
Appeal No. 95-0340
Application 07/771,685
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mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
"Obviousness may not be established using hindsight or in view of
the teachings or suggestions of the inventor." Para-Ordnance
Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing W. L. Gore, 721
F.2d at 1551, 1553, 220 USPQ at 311, 312-13.
We have not sustained the rejection of claims 1 through 20
under 35 U.S.C. § 103. Accordingly, the Examiner's decision is
reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
Appeal No. 95-0340
Application 07/771,685
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) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-0340
Application 07/771,685
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Donald B. Southard
Motorola, Inc.
Corporate Offices
303 East Algonquin Rd.
Schaumburg, IL 60196